Wednesday, 9 March 2016

A good month after publishing the draft legislation to amend the UK Patents Act, the
UK parliament has now passed it (House of Commons on 1 March and the House of
Lords on 2 March). Amending the Patent Act was necessary to adopt the unitary patent.

During the debate, Mr. Edward Vaizey (The Minister for Culture and the Digital Economy) notes that "We think that the new court and patent will be ready for business in early 2017." Indeed, the mandatory three participants have now ratified the agreement or are about to. Two more ratifying countries are needed after Germany and the UK ratified, but this will likely not be a problem.

We are still waiting for the UK to formally ratify the Agreement on a Unified patent court. Will this happen before or after the EU referendum of 23 June? I suppose passing this legislation means that the UK government could ratify the agreement if they wanted to. I'm not sure that this is going to happen though. It may mean a hasty retreat if the referendum goes sour, after just a few months in the new system. For the UK it may be preferable to avoid this. On the other hand, even outside the EU, it is preferable for UK to have an easier option to obtain a patent in the continent. So who know what will happen.

Thursday, 3 March 2016

The Preparatory Committee of the Unified patent court has decided on the Court
fees and recoverable costs. The final 'Rules on Court fees and recoverable costs' is available here.

Last year, a draft had already been published for public consultation. That draft contained two options. In a first alternative, various fee
reductions are given for behavior that reduce court costs, e.g., for settling, especially early
settling, or having only one judge. In the second alternative, small, and medium-sized
enterprises, non-profit organizations, and public research organizations were given a fee exemption.

The final rules present a compromise between these two positions. As in alternative one, a reimbursement of court fees is available for, e.g., withdrawing and settling. Small entities do pay court fees but get a reduction of 40%. In the fees themselves some changes have been made. The additional value based court fee for smaller action has been reduced, e.g., the value-based fee for actions up to a million euro went down from 5000 euro to 4000 euro, while the fees for larger actions has been increased, e.g., value-based fee for actions up to a 20 million went up from 85.000 euro to 100.000 euro. The value-based fee for the largest actions went up by almost 50% to 325.000 euro. Applications to be set aside by default were reduced from 3.000 euro to 1.000 euro.

The ceilings for recoverable costs have been adjusted (mostly downwards) and a number of articles have been added that clarify what these costs cover. Moreover, the court is allowed to increase the ceilings in case multiple languages are used. The big surprise in the new rules is the cancellation of the opt-out fee. In the previous draft applying or withdrawing an opt-out costed 80 euro. In the new and final draft both are free. One problem with the organization of the opt-out system was paying for them. It had been rumored that an opt-out would have to be paid for individually by credit card. If one would have to opt-out a few thousand patents, it might mean a lot of work just paying the opt-out fees. These problems are mooted by cancelling the opt-out fee.